SMALL BUSINESS TECHNOLOGY TRANSFER (STTR) PROGRAM
ALLOCATION OF RIGHTS IN INTELLECTUAL PROPERTY AND
RIGHTS TO CARRY OUT FOLLOW-ON RESEARCH, DEVELOPMENT, OR COMMERCIALIZATION
This Agreement between
, a small business concern organized as a
under the laws of
and having a principal place of business at
, (“SBC”) and the University of Houston, a research
institution having a principal place of business at 4800 Calhoun Blvd, Houston, TX 77204-2015, (“RI”) is
entered into for the purpose of allocating between the Parties certain rights relating to a Small Business
Technology Transfer (“STTR”) project to be carried out by SBC and RI (hereinafter referred to as the
“Parties”) under an STTR funding agreement that may be awarded by
(“Agency”) to SBC to fund a
proposal entitled “
” submitted, or to be submitted, to by SBC on or about
.
1.
2.
Applicability of this Agreement.
a.
This Agreement shall be applicable only to matters relating to the STTR project referred
to in the preamble above.
b.
If a funding agreement for an STTR project is awarded to SBC based upon the STTR
proposal referred to in the preamble above, SBC will promptly provide a copy of such
funding agreement to RI, and SBC will make a sub-award to RI in accordance with the
funding agreement, the proposal, and this Agreement. If the terms of such funding
agreement appear to be inconsistent with the provisions of this Agreement, Parties will
attempt in good faith to resolve any such inconsistencies.
c.
If such resolution is not achieved within a reasonable period, SBC shall not be obligated
to award nor RI to accept the sub-award. If a sub-award is made by SBC and accepted by
RI, this Agreement shall not be applicable to contradict the terms of such subaward or
of the funding agreement awarded by Agency to SBC except on the grounds of fraud,
misrepresentation, or mistake, but shall be considered to resolve ambiguities in the
terms of the subaward.
d.
The provisions of this Agreement shall apply to any and all consultants, subcontractors,
independent contractors, or other individuals employed by SBC or RI for the purposes of
this STTR project.
Background Intellectual Property.
a.
“Background Intellectual Property” means property and the legal right therein of either
or both parties developed before or independent of this Agreement including
inventions, patent applications, patents, copyrights, trademarks, mask works, trade
secrets and any information embodying proprietary data such as technical data and
computer software.
b.
This Agreement shall not be construed as implying that either Party hereto shall have
the right to use Background Intellectual Property of the other in connection with this
STTR project except as otherwise provided hereunder.
(1)
The following Background Intellectual Property of SBC may be used
nonexclusively and, except as noted, without compensation by RI in connection
with research or development activities for this STTR project (if “none” so
state):
(2)
As previously stated in 1(a) above, the terms of this Agreement are meant to
describe the ownership and disposition of new intellectual property developed
during the STTR project named in the Preamble. Accordingly, the Background
Intellectual property of SBC named in 2.b.(1) is, and remains, the sole and
undisputed property of SBC. RI commercialization of other RI project results
which are independent and apart from the results of this STTR project, but
which utilize any of SBC Background Intellectual Property named in 2.b.(1) shall
be preceded by discussions conducted in good faith to negotiate the terms of an
acceptable license between SBC and RI:
(3)
The following Background Intellectual Property of RI may be used nonexclusively
and, except as noted, without compensation by SBC in connection with research
or development activities for this STTR project (if “none” so state):
(4)
The following Background Intellectual Property of RI may be used nonexclusively
and with compensation by SBC in connection with the commercialization of the
results of this STTR project, to the extent that such use is reasonably necessary
for practical, efficient and competitive commercialization of such results, and
when such results are restricted to jointly made or generated Project
Intellectual Property (as described in 3.b. of this Agreement). Such
commercialization shall be preceded by discussions conducted in good faith to
negotiate the terms of an acceptable license between SBC and RI (if “none” so
state):
(5)
The following Background Intellectual Property of RI which is used by SBC and
results in Project Intellectual Property, the subject matter of which is conceived
and first actually reduced to practice by SBC, and therefore owned solely by SBC
(as described in 3.b. of this Agreement), is and remains the sole and undisputed
property of RI. SBC commercialization of any such Project Intellectual Property
owned solely by SBC, but which utilizes RI Background Intellectual Property,
shall be preceded by discussions conducted in good faith to negotiate the terms
of an acceptable license between SBC and RI (if “none” so state):
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(6)
3.
As previously stated in 1.a. above, the terms of this Agreement are meant to
describe the ownership and disposition of new intellectual property developed
during the STTR project named in the Preamble. Accordingly, the Background
Intellectual Property of RI named in 2.b.(2)(3) and (4) is, and remains, the sole
and undisputed property of RI. SBC commercialization of other SBC project
results which are independent and apart from the results of this STTR project,
but which utilize any of RI Background Intellectual Property named in 2.b.(2)(3)
and (4) shall be preceded by discussions conducted in good faith to negotiate
the terms of an acceptable license between SBC and RI.
Project Intellectual Property.
a.
“Project Intellectual Property” means the legal rights relating to inventions (including
Subject Inventions as defined in 37 CFR § 401), patent applications, patents, copyrights,
trademarks, mask works, trade secrets and any other legally protectable information,
including computer software, first made or generated during the performance of this
STTR Agreement.
b.
Except as otherwise provided herein, ownership of Project Intellectual Property shall
vest in Party whose personnel conceived the subject matter or first actually reduced the
subject matter to practice, and such Party may perfect legal protection therein in its
own name and at its own expense. Jointly made or generated Project Intellectual
Property shall be jointly owned by Parties unless otherwise agreed in writing. SBC shall
have the first option to perfect the rights in jointly made or generated Project
Intellectual Property unless otherwise agreed in writing.
(1)
Rights to any revenues and profits, resulting from any product, process, or other
innovation or invention based on the cooperative shall be allocated between
SBC and RI as follows:
SBC Percent:
i.
c.
(to be negotiated)
RI Percent:
(to be negotiated)
Expenses and other liabilities associated with the development and
marketing of any product, process, or other innovation or invention
shall be allocated as follows: SBC will be responsible for 100% and RI will
be responsible for 0%.
Parties agree to disclose to each other, in writing, each and every Subject Invention,
which may be patentable or otherwise protectable under the United States patent laws
in Title 35, United States Code. Parties acknowledge that they will disclose Subject
Inventions to each other and Agency within two (2) months after their respective
inventor(s) first disclose the invention in writing to the person(s) responsible for patent
matters of the disclosing Party. All written disclosures of such inventions shall contain
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sufficient detail of the invention, identification of any statutory bars, and shall be
marked confidential, in accordance with 35 U.S.C. § 205.
d.
Each Party hereto may use Project Intellectual Property of the other nonexclusively and
without compensation in connection with research or development activities for this
STTR project, including inclusion in STTR project reports to Agency and proposals to
Agency for continued funding of this STTR project through additional phases, with
confidential or proprietary markings as appropriate.
e.
In addition to the Government’s rights under the Patent Rights clause of 37 CFR §
401.14, Parties agree that the Government shall have an irrevocable, royalty free,
nonexclusive license for any governmental purpose in any Project Intellectual Property.
f.
SBC shall have an option to commercialize the Project Intellectual Property of RI, subject
to any rights of the Government therein, as follows:
(1)
Where Project Intellectual Property of RI is a potentially patentable invention,
SBC may have an exclusive option for a license to such invention, for an initial
option period of three (3) months after such invention has been reported to
SBC. SBC may, at its election and subject to the patent expense reimbursement
provisions of this section, extend such option for an additional three (3) months
by giving written notice of such election to RI prior to the expiration of the initial
option period. During the period of such option following notice by SBC of
election to extend, RI will pursue and maintain any patent protection for the
invention requested in writing by SBC and, except with the written consent of
SBC or upon the failure of SBC to reimburse patenting expenses as required
under this section, will not voluntarily discontinue the pursuit and maintenance
of any United States patent protection for the invention initiated by RI or of any
patent protection requested by SBC. For any invention for which SBC gives
notice of its election to extend the option, SBC will, within thirty (30) days after
invoice, reimburse RI for the expenses incurred by RI prior to expiration or
termination of the option period in pursuing and maintaining (i) any United
States patent protection initiated by RI and (ii) any patent protection requested
by SBC. SBC may terminate such option at will by giving written notice to RI, in
which case further accrual of reimbursable patenting expenses hereunder, other
than prior commitments not practically revocable, will cease upon RI’s receipt of
such notice. At any time prior to the expiration or termination of an option, SBC
may exercise such option by giving written notice to RI, whereupon Parties will
promptly and in good faith enter into negotiations for a license under RI’s
patent rights in the invention for SBC to make, use and/or sell products and/or
services that embody, or the development, manufacture and/or use of which
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involves employment of, the invention. SBC and RI will negotiate the terms of
such license in good faith.
(2)
Where Project Intellectual Property of RI is other than a potentially patentable
invention, or copyrightable material, SBC will have an exclusive option for a
license, for an option period extending until three (3) months following
completion of RI’s performance of that phase of this STTR project in which such
Project Intellectual Property of RI was developed by RI. SBC may exercise such
option by giving written notice to RI, whereupon Parties will promptly and in
good faith enter into negotiations for a license under RI’s interest in the subject
matter for SBC to make, use and/or sell products or services which embody, or
the development, manufacture and/or use of which involve employment of,
such Project Intellectual Property of RI.
(3)
Where more than one royalty might otherwise be due in respect of any unit of
product or service under a license pursuant to this Agreement, Parties shall in
good faith negotiate to ameliorate any effect thereof that would threaten the
commercial viability of the affected products or services by providing in such
license(s) for a reasonable discount or cap on total royalties due in respect of
any such unit.
4.
Follow-on Research or Development. All follow-on work, including any licenses, contracts,
subcontracts, sub licenses or arrangements of any type, shall contain appropriate provisions to
implement the Project Intellectual Property rights provisions of this Agreement and insure that
Parties and the Government obtain and retain such rights granted herein, if any, in all future
resulting research, development, or commercialization work.
5.
Confidentiality/Publication.
a.
Background Intellectual Property and Project Intellectual Property of a Party, as well as
other proprietary or confidential information of a Party, disclosed by that Party to the
other in connection with this STTR project shall be received and held in confidence by
the receiving Party. Except with the consent of the disclosing Party or as permitted
under this Agreement, each Party will use all reasonable efforts to hold in confidence
the proprietary information of the other, provided that the receiving Party has notice
that such information is regarded by the disclosing Party as proprietary or confidential.
Each Party’s obligation of confidence hereunder shall be fulfilled by using at least the
same degree of care with the other Party’s information as it uses to protect its own
information.
Confidential information does not include information which at the time of receipt:
(1)
Is already independently known to the receiving Party, or
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(2)
Is generally available in the public domain or thereafter becomes available to
the public through no fault of either Party; or
(3)
Is discovered independently by an employee of the receiving Party who has no
access to the information supplied by the providing Party under this Agreement;
or
(4)
Is made available to one of Parties by a third party as a matter of the third
party’s lawful right and without breach of any obligation which may be owed by
the third party to the other Party, or
(5)
Is made available to a third party by one of Parties as a matter of that Party’s
lawful right and without breach of any obligation owed by that Party to the
other Party, or
(6)
Is legally required to be disclosed to any governmental agency, at which time
the disclosing Party will notify the other Party.
Each Party retains the right to refuse or to accept any such information that is not considered to
be essential to the completion of the research. The obligations of each Party under this
paragraph shall survive and continue for three (3), or greater, years after termination of this
Agreement.
b.
6.
Subject to the terms of paragraph (a) above, either Party may publish its results from
this STTR project. However, the publishing Party will give the reviewing Party a thirty
(30) day period in which to review proposed publications and submit comments, which
will be given full consideration before publication. Furthermore, upon request of the
reviewing Party, publication will be deferred for a maximum of sixty (60) additional days
for preparation and filing of a patent application which the reviewing Party has the right
to file or to have filed at its request by the publishing Party. Such delay shall not,
however, be imposed on the filing of any student thesis or dissertation.
Liability.
a.
Each Party disclaims all warranties running to the other or through the other to third
parties, whether express or implied, including without limitation warranties of
merchantability, fitness for a particular purpose, and freedom from infringement, as to
any information, result, design, prototype, product or process deriving directly or
indirectly and in whole or part from such Party in connection with this STTR project.
b.
SBC agrees to indemnify and hold harmless RI, the University of Houston System
(“System”), their Regents, officers, agents and employees from any liability, loss, or
damage they may suffer as a result of any claim, demand, cost or judgments against
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them arising out of the activities to be carried out in this Agreement, including but not
limited to the commercialization of the results of this STTR project by or under the
authority of SBC; provided, however, that the following is excluded from SBC’s
obligation to indemnify and hold harmless:
c.
7.
8.
(1)
the negligent failure of RI to substantially comply with any applicable
governmental requirements; or
(2)
the negligence or willful malfeasance of any Regent, officer, agent or employee
of RI or System.
Both parties agree that upon receipt of a notice of claim or action arising out of the
Agreement, Party receiving the notice will notify the other Party promptly. SBC agrees,
at its own expense, to provide attorneys to defend against any actions brought or filed
against RI, the System, their Regents, officers, agents and/or employees with respect to
the subject of the indemnity contained herein, whether such claims or actions are
rightfully brought or filed; subject to the statutory duty of the Texas Attorney General,
RI agrees to cooperate with SBC on the defense of such claim or action.
Termination.
a.
Either Party upon ninety (90) days written notice to the other Party may terminate this
Agreement.
b.
In the event that either Party is perceived to commit any breach of or default in any of
the terms and conditions of this Agreement, and fails to remedy such default or breach
within thirty (30) days after receipt of written notice from the other Party, Party giving
notice may, at its option and in addition to any other remedies that it may have at law
or in equity, terminate this Agreement by sending a written Notice of Termination to the
other Party. Such termination shall be effective as of the receipt date of such notice.
c.
In the event of termination by either Party, each Party shall be responsible for its share
of the costs incurred through the effective date of termination, as well as its share of
the costs incurred after the effective date of termination, and which are related to the
termination. Any provisions of this Agreement which by their nature extend beyond
termination, including but not limited to confidentiality, use, and/or non-disclosure
obligations, shall survive any termination of this Agreement.
Entire Understanding. This Agreement constitutes the entire understanding between Parties
regarding this subject matter (allocation of intellectual property rights), and all other prior
negotiations, representations, and understandings, whether oral or written, are superseded
hereby. No Agreements altering or supplementing the terms hereof may be made except by a
written document signed by both parties.
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9.
Miscellaneous.
a.
This Agreement may not be assigned by SBC without the prior written consent of RI.
b.
This Agreement shall be construed and enforced in accordance with the laws of the
State of Texas (exclusive of its choice of law provisions).
c.
For the purpose of this Agreement and all activities hereunder, Parties are independent
contractors and not agents or employees of the other Party. Neither Party shall have
authority to make any statements, representations, or commitments of any kind, or to
take any action that shall be binding on the other Party, except as expressly stated
herein or authorized in writing.
d.
Headings are included herein for convenience only and shall not be used to construe
this Agreement.
Agreed to and accepted by:
UNIVERSITY OF HOUSTON
Signature
SMALL BUSINESS CONCERN
Date
Signature
Name:
Name:
Title:
Title:
Date
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